What happens if an appellant chooses to reopen prosecution after a new ground of rejection?
If an appellant chooses to reopen prosecution after the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the process is as follows, according to MPEP 1213.02: The appellant submits an amendment to the rejected claims, new evidence, or both. The case is remanded to the examiner for reconsideration. The new ground…
Read MoreCan I reopen prosecution after filing an appeal?
Yes, you can reopen prosecution after filing an appeal by submitting a Request for Continued Examination (RCE). The MPEP provides guidance on this: “Prior to a decision by the Board, if an applicant wishes to withdraw an application from appeal and to reopen prosecution of the application, applicant can file a request for continued examination…
Read MoreHow does the MPEP address the reliance on fewer than all references in an Examiner’s Answer?
The MPEP 1207.03 provides guidance on how reliance on fewer than all references in support of a rejection in an Examiner’s Answer is treated. Specifically: “Relying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings. Assuming the rejection is otherwise proper, if the examiner’s answer…
Read MoreWhat are the requirements for an appeal brief in a reissue application?
The requirements for an appeal brief in a reissue application are the same as those for a non-reissue application. MPEP 1454 states: “The requirements for an appeal brief are set forth in 37 CFR 41.37 and MPEP § 1205, and they apply to a reissue application in the same manner that they apply to a…
Read MoreUnder what circumstances can a patent appeal be dismissed?
A patent appeal can be dismissed under various circumstances, including: Failure to file a timely appeal brief Submission of an incomplete or non-compliant appeal brief Lack of jurisdiction by the Patent Trial and Appeal Board (PTAB) Failure to respond to a requirement or order from the PTAB Abandonment of the application The specific reasons for…
Read MoreWhat is the ‘real party in interest’ in a patent appeal brief?
The ‘real party in interest’ is a required component of a patent appeal brief, as specified in MPEP 1205.02. It refers to the actual entity that owns the rights to the patent application. According to the MPEP: “A statement identifying by name the real party in interest at the time the appeal brief is filed,…
Read MoreWhat is the purpose of a civil action under 35 U.S.C. 145?
What is the purpose of a civil action under 35 U.S.C. 145? A civil action under 35 U.S.C. 145 provides an alternative to an appeal to the Court of Appeals for the Federal Circuit for an applicant dissatisfied with the decision of the Patent Trial and Appeal Board (PTAB). The MPEP states: “Under 35 U.S.C.…
Read MoreCan the public attend patent appeal oral hearings?
The public’s ability to attend patent appeal oral hearings depends on the type of application involved. According to the MPEP: “The Board’s current procedure permits members of the public to attend oral hearings in appeals of reexamination proceedings, reissues, and published applications. Members of the public are not permitted to attend appeals of non-published applications.”…
Read MoreCan the Patent Trial and Appeal Board reject claims that were previously allowed by the examiner?
Yes, the Patent Trial and Appeal Board (PTAB) has the authority to reject claims that were previously allowed by the examiner. According to MPEP 1213.02: “Under 37 CFR 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case, including claims which…
Read MoreWhat is the process for admitting new evidence in a patent appeal?
The process for admitting new evidence in a patent appeal involves several steps and considerations. According to MPEP 1206: “If the examiner determines that the evidence should be entered, prosecution must be reopened if the evidence would at least raise a substantial question regarding the propriety of a pending rejection.” The examiner must first determine…
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